By Ronald Slusky
Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his book “Invention Analysis and Claiming: A Patent Lawyer’s Guide” published by the American Bar Association and available at all online bookstores. More information about the book can be found at www.claim- drafting.com. Ron can be reached at 212-246-4546 and firstname.lastname@example.org
Last month’s column discussed the independent embodiment claim. This is a claim in independent form that includes one or more details of the inventor’s embodiment(s) —details not included in a claim intending to define the invention at its full breadth. Although we can always include embodiment details in one or more dependent claims, we saw last month how an independent embodiment claim can actually be broader than a dependent claim reciting those same details. The reason is that details in a dependent claim may render certain limitations in its parent claim(s) no longer necessary to distinguish the invention from the prior art and are thus redundant.
This column focuses more specifically on the formulation of independent embodiment claims.
Balancing Patentability and “Infringeab...